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Patenting Inventions
 

 

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    Patenting Inventions Patenting Inventions Presentation Transcript

    • European Business & Innovation Centre Network Patenting an Invention András Haszonits Amman, 16 May 2010 1
    • Agenda • Patentable inventions • Patentability criteria – Novelty – Inventive step • Patent granting process • Supplementary protection certificate 5/26/2010 Andras Haszonits 2 2
    • Overview You will be able to answer the following questions: • What are patentable inventions • Which are the patentability criteria • If a solution was novel • If a solution contained inventive step • How to protect new plant varieties? • Hich qualities enable a plant to obtain protection? • What does SPC mean, and what it applies to? • How to calculate how long protection will last in case of SPC? 5/26/2010 Andras Haszonits 3 3
    • Patent Protection • A patent provides protection for the invention to the owner for a limited period, generally 20 years. • Protection means that the invention can not be commercially made, have made used distributed sold, offered for sale stored in commercial quantity imported, or even transported without the patent owner’s consent. Question: – Does the patent entitles its owner to commercially exploit the invention? 5/26/2010 Andras Haszonits 4 4
    • General patentability criteria Under (any) patent law there are 4 basic requirements for patentability: • it must be of practical use (= industrial application) • there must be an invention • it must be new (= novelty) • it must involve an inventive step + + + 5/26/2010 Andras Haszonits 5 5
    • Patentability Invention • An invention can be – a product or – an apparatus for producing a product or – a process for producing a product or – the use of a product. • Any invention, the publication or exploitation of which would be contrary to public order or morality is specifically excluded from patentability. + + + 5/26/2010 Andras Haszonits 6 6
    • Patentability Invention • What are not inventions – discoveries, scientific theories, mathematical methods – aesthetic creations – schemes, rules and methods for performing mental acts, playing games or doing business (business methods are patentable in the US!) – presentation of information – the human body any non-separate part/s thereof + + + 5/26/2010 Andras Haszonits 7 7
    • Patentability Invention • Exceptions to patentability: – processes for cloning human beings – processes for modifying the germline genetic identity of human beings – uses of human embryos for industrial or commercial purposes – processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal + + + 5/26/2010 Andras Haszonits 8 8
    • Patentability Invention • Exceptions to patentability: – methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body shall not be regarded as inventions which are susceptible of patentability BUT! + + + 5/26/2010 Andras Haszonits 9 9
    • Patentability Invention • Patents may be obtained – for surgical, therapeutic or diagnostic instruments or apparatus for use in such methods – for new products for use in the methods of treatment or diagnosis, particularly substances or compositions („first medical use”) – for known known substances or compositions for use in such methods if their use was not previously disclosed for this kind of use („second medical use”). + + + 5/26/2010 Andras Haszonits 10 10
    • Patentability Industrial application • An invention is industrial applicable if it can be made or used in any any kind of industry, including agriculture • The invention must have at least one practical purpose and must be reproducible • There is no evaluation of quality or economical factors, only the technical qualities are relevant + + + 5/26/2010 Andras Haszonits 13 11
    • Patentability Novelty An invention is new if it does not form part of the state of the art. The state of the art amounts to absolute novelty which comprises everything made available (known) to the public: • by the means of a written or oral description • by use or • in any other way before the date of filing of the patent application. + + + 5/26/2010 Andras Haszonits 14 12
    • Patentability Novelty Relating to the state of the art there are no restrictions on • the geographic allocation • the language • the age of the relevant documents or other sources of the information. WATCH OUT! Even the inventor can destroy novelty of his/her own patent application! + + + 5/26/2010 Andras Haszonits 15 13
    • Patentability Novelty - Non-prejudical disclosures: • An evident abuse in relation to the applicant e.g. the invention was derived from the applicant and disclosed against his wish; or • The display of the invention by the applicant at an officially recognized exhibition defined in the law. • Essential condition: the disclosure must have taken place not earlier than 6 months preceding the filing of the application. • US Grace period : Own pre-publication is not destroying nowelty, if happened not longer before 1 year of filing patent application. • JP legal exemption: 6-months pre-use in Japan protection term for novelty. 5/26/2010 Andras Haszonits 19 14
    • Patentability Novelty Search Upon databases a search will be performed and as a result of this a Search Report will be prepared. Search Report Document Categories • X – attacks application (novelty + inventive step) • Y – attacks application in part (in combination with other document, inventive step) • A – document which shows „state of the art” • D – document cited by the applicant + + + 5/26/2010 Andras Haszonits 20 15
    • Patentability Novelty Search + + + 5/26/2010 Andras Haszonits 21 16
    • Patentability Inventive step An invention involves an inventive step if it is not obvious to a person skilled in the art. Considerations: • the unforeseen technical effect produced by a new combination of known elements • selection within a known range + + + 5/26/2010 Andras Haszonits 22 17
    • Patentability Inventive step An invention involves an inventive step if it is not obvious to a person skilled in the art. Fictional person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. • Most difficult part of the examination • Subjective components of evaluation • Problem-solution approach + + + 5/26/2010 Andras Haszonits 23 18
    • Patentability Inventive step Problem-solution approach • Identifying the prior art • Closest prior art • Differences • Person skilled in the art • Formulate the technical problem • Decide on obviousness + + + 5/26/2010 Andras Haszonits 24 19
    • Supplementary Rights and Certificates Plant Varieties • Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species • Variety – a plant grouping within a single botanical taxon of the lowest known rank Lasts for: • 25 years in general, • 30 years, in the case of vines and trees. 5/26/2010 Andras Haszonits 32 20
    • Supplementary Rights and Certificates Plant Varieties • If the breeder is an employee, the entitlement to the plant variety right shall be determined in accordance with the national law applicable to the employment relationship in the context of which the variety was bred, or discovered and developed. • Local regulations are usually similar as to the employee / service patents. 5/26/2010 Andras Haszonits 33 21
    • Supplementary Rights and Certificates Plant Varieties Requirements: For a variety to be protected, it must be • novel, • distinct, • uniform DUS examination • stable, • must have a suitable denomination 5/26/2010 Andras Haszonits 34 22
    • Supplementary Rights and Certificates Plant Varieties DUS examination: • Experimental testing • Carried out by a specific scientific examination authority. • Applicant may file the results of experimental testing (whichever expires later): – within 4 years from the date of priority or, – within 3 months from the notification of the results of experimental testing. 5/26/2010 Andras Haszonits 35 23
    • Supplementary Rights and Certificates Plant Varieties Novelty: • the variety must not have been sold, or otherwise disposed for: • more than 1 year prior to the application for a breeder's right locally, • or more than 4/6 (six years for trees or vines) abroad. 5/26/2010 Andras Haszonits 36 24
    • Supplementary Rights and Certificates Plant Varieties DUS examination Distinctness • A variety is distinct if it is clearly distinguishable from any other commonly known variety at the time of filing of the application. • A variety of common knowledge does not have to be a protected variety and includes ecotypes or landraces which fall within the definition of variety. 5/26/2010 Andras Haszonits 37 25
    • Supplementary Rights and Certificates Plant Varieties DUS examination Uniformity: • A variety is uniform if it is sufficiently uniform in its relevant characteristics (subject to the variation that may be expected from the particular features of its propagation). • The uniformity requirement was established to ensure that the variety can be defined for the purpose of protection. • The criterion for uniformity does not require absolute uniformity and takes into account the nature of the variety itself. • Furthermore, it relates only to the characteristics relevant for the protection of the variety. 5/26/2010 Andras Haszonits 38 26
    • Supplementary Rights and Certificates Plant Varieties DUS examination Stability: • A variety is stable if its relevant characteristics remain unchanged – after repeated propagation or, – in the case of a particular cycle of propagation, at the end of each such cycle. • The criterion for stability has been established to ensure that the identity of the variety, as the subject matter of protection, is kept throughout the period of protection. • The criterion for stability relates only to the relevant characteristics of a variety. 5/26/2010 Andras Haszonits 39 27
    • Supplementary Rights and Certificates Plant Varieties Denomination: • must be different from all other denominations used for the same, or a closely related, species; • must not be misleading or causing confusion concerning the characteristics, value or identity of the variety or identity of the breeder • must enable the variety to be identified; • no rights in the denomination shall hamper its free use as the variety denomination (even after expiry of the breeder's right); • prior rights of third persons must not be affected; • it may not consist solely of figures. 5/26/2010 Andras Haszonits 40 28
    • Supplementary Rights and Certificates Plant Varieties Special regulation: the Farmers Privilege: • In many countries farmers are allowed to use seeds of the previous harvest of protected plant in the next year. • They can do so without the consent of the breeder. • In some cases there is a limitation on farmers privilege based on: – the area used to grow the protected plant variety – the species • In most of the countries like in Jordan (as being member of the International Convention for the Protection of New Varieties of Plants - UPOV Convention) breeders are entitled to remune- ration form the farmer, which is usually equal to the 50% of the license fee built in to the same amount of sealed marketed plant. • Payment of the fee is due when the spared seed is sowed. 5/26/2010 Andras Haszonits 41 29
    • Supplementary Rights and Certificates Supplementary Protection Certificate (SPC) For products which constitute: • the active ingredient or combination of active ingredients of a medicinal product or • the active substance or combination of active substances of a plant protection product Reason: • Medicinal and plant protection products’ exploitation has to be postponed until authorization for placing on the market is received from health and agricultural authorities. • Supplementary protection compensates for the loss of effective protection. 5/26/2010 Andras Haszonits 42 30
    • Supplementary Rights and Certificates Supplementary Protection Certificate (SPC) Relevant for member states of the EC. Lasts for: • The certificate takes effect as the basic patent expires, for a period equal to the time lapsed between the date on which the application for the patent was filed and the date of the authorization to place the product on the market, reduced by 5 years, • Maximum of 5 years (5,5 years in case of human medicine in some countries) long after patent protection expires • This special calculation method ensures that the product covered by the basic patent enjoys an overall maximum of 15/15,5 years of adequate and effective protection. 5/26/2010 Andras Haszonits 43 31
    • Supplementary Rights and Certificates Supplementary Protection Certificate (SPC) Lasts for: date of patent date of patent application expiration 5 years 20 years 15 years maximum -5 years authorization of effective protection granted 5/26/2010 Andras Haszonits 44 32
    • Supplementary Rights and Certificates Supplementary Protection Certificate (SPC) Lasts for: date of patent date of patent application expiration 5 years 20 years 15 years maximum -5 years authorization of effective protection granted 5/26/2010 Andras Haszonits 45 33
    • Supplementary Rights and Certificates Supplementary Protection Certificate (SPC) Lasts for: date of patent date of patent application expiration 5 years 20 years SPC 15 years maximum -5 years authorization of effective protection granted 5/26/2010 Andras Haszonits 46 34
    • Recommended readings • World Intellectual Property Organisation (WIPO) www.wipo.org • EuropeanPatent Office (EPO) www.european-patent-office.org • US Patent and Trademark Office (USPTO) www.uspto.gov • ip4inno - IPR management to support innovation and growth http://www.ip4inno.eu/ • ipr-helpdesk - IPR, CIP, FP7 related informations: http://www.ipr-helpdesk.org/home.html Plant Varieties • http://www.upov.int/en/publications/tg-rom/tg001/tg_1_3.pdf SPC • http://www.ipo.gov.uk/spctext.pdf 5/26/2010 Andras Haszonits 47 35
    • Thank you very much for your attention András Haszonits haszonitsandras@upcmail.hu The training material is to be used exclusively in conjunction to the SRTD project in Jordan 5/26/2010 Andras Haszonits 48 36